The United States Patent and Trademark Office (USPTO) announced on Oct. 4, 2022, that it is extending the Motion to Amend (MTA) Pilot Program through September 16, 2024. The MTA Pilot Program was initiated on March 15, 2019....more
CalTech v. Broadcom. You may have read multiple articles about how the Feb. 4, 2022 precedential opinion of the CAFC in California Institute of Technology v. Broadcom Limited, et al., 20-2222 (“CalTech v. Broadcom”) widened...more
As we’ve noted in earlier blog posts, following the Fintiv decision, the PTAB has been denying petitions where a federal court is likely to decide validity before a final would be reached by the PTAB. A study by Unified...more
First, a bit of background. Inter-Partes Review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e). In 2018, The Shaw decision...more
In view of the $2.18 billion jury verdict against Intel for patent infringement, in-house counsel may wonder how to keep that from happening to them (see VLSI Technology LLC v. Intel Corp., 21-57, U.S. District Court for the...more
The PTAB’s precedential Fintiv decision (Apple v. Fintiv, Inc, IPR2020-00019) held that the PTAB could deny institution of an IPR, even within the one year statutory bar, if (1) district court litigation has progressed...more
San Francisco Partner Paul Haughey shares six things you should know about inter partes review....more
Based on recent court and PTAB (Patent Trial and Appeal Board) decisions, here are some basics in-house counsel should know in managing outside IPR counsel.
Preemptive IPRs may not be appealable.
An IPR must be filed within...more
The Federal Circuit held, in a precedential opinion on June 14, 2019, that sovereign immunity does not apply to IPRs challenging state-owned patents (Regents of the Univ. of Minnesota v. LSI Corp., No. 2018-1559, --- F.3d...more
Summary -
The PTAB recently published its first-ever final written decision in a derivation proceeding, which allows a patent to be challenged as being derived from the true inventor. The decision found no derivation, and...more
In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged...more
In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged...more
The Federal Circuit on Nov. 9, 2018 held that assignor estoppel does not apply to IPRs: Arista Networks, Inc. v. Cisco Sys., Inc., No 17-1725, slip. Op. at 17-23 (Fed. Cir. Nov. 9, 2018.) -
The Court held: -
“We...more
Consistent with Director Iancu’s goal of providing greater predictability and certainty in the US patent system, the US Patent and Trademark Office (USPTO) on Tuesday proposed a new rule to change the standard for claim...more
Whether a patent qualifies for a CBM review has been a moving target. Early decisions held that the claims do not need to be directed to a “financial product or service,” since a reference in the specification to a financial...more
The amendments are in the April 1, 2016 Federal Register. The amendments are effective May 2, 2016, and apply not only to new petitions, but to ongoing ones. Thus, for example, if the deadline for a preliminary response, or...more